WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OSRAM GmbH v. Whois Domain Admin / pointbio
Case No. D2014-1048
1. The Parties
The Complainant is OSRAM GmbH of Munich, Germany, represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Whois Domain Admin of Seoul, Republic of Korea / pointbio of Seongnam, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <osramimplant.com> is registered with Whois Networks Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on June 23, 2014 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to amend the Complaint. The Complainant filed an amendment to the Complaint on June 25, 2014.
On June 24, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement was Korean. On June 26, 2014, the Complainant requested English to be the language of the proceeding. The Respondent did not submit a language request.
The Center verified that the Complaint with the amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on June 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2014.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on July 30, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, based in Germany and registered under the name Osram GmbH, is the owner of multiple trademarks consisting of, or comprising the mark OSRAM in various countries around the world. As part of the OSRAM group of companies, the Complainant is engaged in the business and manufacturing of lighting products for various applications, employs over 40,000 people and supplies customers in over 150 countries.
The Complainant has traded under the name OSRAM since the early twentieth century, when it commenced business. Over 100 years ago, the “OSRAM” brand was registered as a trademark for “electrical incandescent and arc lamps”. Over time, the Complainant has registered more than 500 OSRAM trademarks and service marks in over 150 countries and regions. The Complainant owns over 100 international OSRAM trademarks and further owns more than 160 domain names comprising the mark OSRAM.
The fame of the trademark OSRAM has been recognized in numerous WIPO decisions, e.g., Osram GmbH v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004 and Osram GmbH v. Ocean Grenier, WIPO Case No. D2008-0083.
5. Parties’ Contentions
The fame of the OSRAM trademark has been confirmed in numerous UDRP decisions. In this case, the Complainant initiated proceedings on the grounds that:
(i) The dominant part of the disputed domain name comprises the term “OSRAM”, which is identical to the Complainant’s registered trademark, and thus confusingly similar. The addition of the term “implant” does not detract from the overall impression created. Further, the addition of the generic Top-Level Domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity or identity between the trademark and the disputed domain name.
(ii) The Complainant has not given any license or authorization of any other kind to the Respondent. The Complainant has also not found anything that would suggest that the Respondent has been using the name “OSRAM” in any other way that would give it any legitimate rights in the name. Consequently, the Respondent may not claim any rights established by common usage.
(iii) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but rather to generate traffic and income through an online shop of products to mislead and to divert consumers for its own commercial gain. The content of the website under the disputed domain name markets some of the Respondent’s dental products and further uses the Complainant’s OSRAM trademark for advertising purposes. It is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in OSRAM at the time of the registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complaint was originally filed in English. The language of the registration agreement for the disputed domain name is Korean. The Panel notes that the Complainant filed a request for English to be the language of the proceeding. The Respondent failed to respond in any language.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Respondent has not objected to English as the language of the proceeding. Moreover, in a previous UDRP case, Huppe GmbH & Co. KG v. Woong Kang, WIPO Case No. D2007-1166, the respondent waived any objection to proceeding in English by failing to respond to the Center’s notice sent in both English and Korean.
The Complainant is unable to communicate efficiently in Korean, and therefore, the administrative proceeding would be unduly delayed should the Complainant be required to submit all documents translated into Korean.
Therefore, the Panel hereby decides, under paragraph 11 of the Rules, English shall be the language of the administrative proceeding.
B. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.” Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
C. Identical or Confusingly Similar
The Complainant has registered the OSRAM mark in various countries (see Annex 7 of the Complaint) in connection with numerous classes of products. The disputed domain name wholly incorporates the Complainant’s distinctive trademark and a supplementary term that does not in this case differentiate the trademark from the disputed domain name, and as such, creates sufficient similarity to be confusingly similar (see paragraph 4(a) of the Policy).
The Panel finds that the latter part of the disputed domain name, “implant”, does not sufficiently distinguish the disputed domain name from the Complainant’s “OSRAM” trademark. Addition of a generic term to the disputed domain name has little, if any, effect on a determination of confusing similarity or identity between the disputed domain name and the mark. See Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; mere addition of a generic or descriptive term does not exclude the likelihood of confusion. See PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189. Numerous UDRP decisions have recognized that adding a generic word is insufficient to give any distinctiveness to the domain name in dispute. See PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629. Additionally, in LEGO Juris A/S v. Matthew Griffith, Merlix LLC, Domain Administrator, WIPO Case No. D2012-0443 involving the domain name <legobuilder.com>, it was held that the term “builder” should be disregarded for the purpose of this analysis.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several UDRP decisions have held that “once a complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production of this factor shifts to the Respondent to rebut the showing” (see, among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in respect of the disputed domain name under paragraph 4(c) of the Policy.
Nevertheless, the Complaint provides screenshots of the website published under the disputed domain name that suggest the Respondent marketed products, namely 오스람 (OSRAM) dental implant surgical kits. This could provide grounds for the disputed domain name to remain registered with the Respondent and to potentially coexist with the OSRAM trademark without infringing the rights of the Complainant, according to paragraph 4(c) of the Policy (see Kiko s.r.l. v. Hai Sen Ding c/o The World Executive Group Inc., WIPO Case No. D2013-2130). However, were this the case, the Panel expects that the Respondent would have submitted a response saying as much; the Respondent did not do so. Moreover, the Complainant alleges that the Complainant’s mark has been used in connection with the dental industry. The relation in the fields of business implies an important overlap between the Parties with respect to the exploitation of the OSRAM trademark’s goodwill. In the Panel’s view, without any explanation from the Respondent as to why it chose the disputed domain name, the Panel is left with the conclusion that the Respondent intended to trade on the Complainant’s longstanding reputation (globally, but notably including in the Respondent’s domicile), and therefore lacks rights or legitimate interests for purposes of the Policy. Finally, there is no evidence on the record before the Panel to show that the Respondent has a significant history of marketing products under the name OSRAM.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to the Policy, paragraph 4(a)(ii).
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy, a well-established principle is that when someone registers a domain name, he or she represents and warrants that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademarks are famous worldwide (and have been for a considerable period of time), it is more likely than not that the Respondent, at the time of registration of the disputed domain name or thereafter, was aware of the Complainant and its trademarks, and in fact (as described in Section D above) that the Respondent registered the dispute domain name for that very reason.
Under the UDRP, bad faith can, in the circumstances of this case as evidenced in the record before the Panel, be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware (or at least should have been aware) of the Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices in various jurisdictions including that of the Respondent would have made the Complainant’s registration known to the Respondent.
In addition, according to paragraph 4(b)(iv) of the Policy, the following circumstance shall be evidence of bad faith registration and use: using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or a product or service on the registrant’s website or location.
There is no question that the Complainant has a significant presence in Korea and moreover that its mark is well-known globally. Despite the Complainant’s century-long use of its mark, and particularly in the absence of any response to put forth arguments as to the Respondent’s possible rights or intentions, the Panel is of the view that the Respondent registered a confusingly similar domain name to piggyback on the Complainant’s fame and goodwill and attract users based on the Complaint’s mark for its own commercial gain. In the Panel’s opinion, this constitutes an improper use of the Complainant’s mark. See Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774. The Panel finds that such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <osramimplant.com>, be transferred to the Complainant.
Thomas P. Pinansky
Date: August 11, 2014